DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendments received 08/10/2026 have been entered. Claims 1 and 7-9 are pending. Any objection or rejection previously set forth in the Office Action mailed 05/12/2026 not maintained herein has been overcome and is withdrawn. New grounds of rejection are set forth herein, as necessitated by Applicant’s amendments to the claims.
Election/Restrictions
Amended claims 8-9 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claims 8 and 9 have been amended to recite methods of inhibiting TSLP, IL, or G-CSF and treating skin conditions, respectively.
The inventions of claims 1 and 7 and 8-9 are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the process of use can be practiced with a materially different product, such as by administering another interleukin inhibitor (claim 8) or a topical steroid (claim 9).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 8-9 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite the limitations below.
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However, the amendment is not adequately supported by the instant disclosure at the time of filing. On page 4 of the specification filed 11/07/2023, L is selected from “a direct bond and C1-C5 alkylene”. Page 6 of the specification further limits L to recite “L may be a direct bond, methylene or ethylene”. The limitations of C1-C5 alkylene, methylene, and ethylene do not provide support for both “-CH2-CH2-“ and “-CH=CH-“ as alternatives for the definition of L, as “alkylene” is defined on page 9 of the specification as “a divalent functional group” wherein examples include “methylene, ethylene…”. It is unclear from the instant disclosure as filed whether “alkylene” encompasses both divalent alkyl and divalent alkene.
Moreover, while particular species are set forth wherein the L position is divalent alkyl (e.g., 3C3) or divalent alkene (e.g., CA3), the disclosure of a species does not necessarily provide adequate support for the claimed subgenus of Formula 2 (claim 1) as a whole. In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) ("Whatever may be the viability of an inductive-deductive approach to arriving at a claimed subgenus, it cannot be said that such a subgenus is necessarily described by a genus encompassing it and a species upon which it reads." (emphasis added)). As the disclosure of the genus encompassing that of Formula 2 is unclear, and the only clear disclosure depicting L as “-CH2-CH2-“ or “-CH=CH-“ is set forth as particular species, one of ordinary skill in the art would not be apprised that Applicant was in possession of the claimed invention at the time of filing. The amendments at issue constitute new matter. Correction is required.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, alternatively, 35 U.S.C. 103 as being unpatentable over Kwak et al. (Food Chemistry; 2011; previously cited).
Kwak et al. discloses antioxidative caffeoyl-proline dipeptides with the following core structure, including wherein the proline dipeptide of the caffeoyl-proline dipeptide is proline-histidine (Table 1; Fig. 1).
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The caffeoyl-proline dipeptide wherein R is the side chain of histidine (-CH2-imidazolyl) has the following structure, as provided by STN (see Examiner’s search strategy mailed 05/12/2026).
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The compound overlaps with the scope of the claims wherein L is -CH=CH-, R1 is phenyl disubstituted by hydroxyl at R7 and R8 or1 at R6 and R7, R2 is imidazolyl, R3 is amino, and R4 is hydrogen.
The compound wherein R1 is phenyl disubstituted by hydroxyl at R7 and R8 does not trigger the proviso requiring that the compound have the stereochemistry of Formula 4, 5, or 6 (see Remarks, p. 14) and therefore anticipates the instant claims.
Alternatively, the compound wherein R1 is phenyl disubstituted by hydroxyl at R6 and R7 differs from the instant claims wherein the compound does not have the stereochemistry of Formula 4, 5, or 6. However, MPEP 2144.09 states “Compounds which are… position isomers (compounds having the same radicals in physically different positions on the same nucleus… are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). As such, one of ordinary skill in the art would be apprised, absent unexpected results, that the stereoisomer of Kwak et al. would have properties similar to that of the instantly claimed compounds such that it would be prima facie obvious to arrive at other isomeric forms of the compound of Kwak et al.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE E BRAUN whose telephone number is (703)756-4533. The examiner can normally be reached M-F 8:30am-5:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.E.B./Examiner, Art Unit 1624 08/21/2026
/JEFFREY H MURRAY/Supervisory Patent Examiner, Art Unit 1624
1 Since the bond between the phenyl and alkene of the above compound may rotate, the position of the hydroxyl groups can be interpreted as being located on either R7 and R8, or on R6 and R7.
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